Filing Letters of Protest
Alt Legal Team | April 30, 2020
If you identify a trademark application that seems similar to a mark that you own or represent or that presents another issue that you believe the USPTO should take into account, you aren’t limited to just opposing the trademark once it’s been approved for publication. The USPTO also offers a relatively unknown and more informal option: a Letter of Protest.
Letters of protest are arguably less adversarial, easier to prepare, and less costly than traditional oppositions. The Trademark Manual of Examining Procedures (TMEP) details the process and situations for which you may file a letter of protest.
Grounds and Procedure
The TMEP identifies four main reasons that a Letter of Protest can be approved on a trademark application: “genericness or descriptiveness,” “likelihood of confusion,” “pending litigation claiming infringement,” and use of registered marks in “identifications of goods and services, mark descriptions, or other application data fields” (TMEP 1715.01(a)).
On the other hand, a letter of protest is not appropriate if a third party: “claims earlier common-law use of a trademark,” “claims that the applicant is not the proper owner of the mark,” or opposes registration without “evidence or legal reason” (TMEP 1715.01(b)).
If the letter of protest is submitted prior to publication, it will be accepted as long as the evidence presented is relevant and supports any of the acceptable grounds above (or any other grounds that the USPTO uses to refuse a mark). However, if submission occurs after publication, it can only be accepted when evidence provides urgent grounds that the mark should never have been published.
If the LOP is accepted by the USPTO, a Letter of Acceptance is sent to the protestor, an administrative memo is uploaded to the TSDR with any submitted evidence, and the trademark’s prosecution history is updated to include the status “Letter of Protest Accepted.” If this acceptance occurs pre-publication, the examining attorney is then notified and they can use their discretion to take action based on the evidence. If no further action is taken, the Prosecution History is then updated to show “Letter of Protest Evidence Reviewed – No Further Action Taken.” If the LOP is accepted post-publication, the examining attorney is required to act on it and require changes to or refuse the trademark application.
Drafting and Evidence
Now that you know the specific situations in which a letter of protest may be considered by an examiner, let’s talk about what makes a successful letter of protest. Here are some helpful tips that may make serving your clients easier.
Make sure the USPTO knows which trademark the letter is referencing and that the document is labeled as a letter of protest.
Do not submit detailed arguments. Instead, stick to the specific evidence you’d like the USPTO examiner to consider. For instance, if you believe a trademark application presents a likelihood of confusion with an existing trademark, you’d simply write a brief letter containing the application and registration numbers, literal elements, goods and services, and evidence to support the claim of confusion. In a non-Likelihood-of-Confusion LOP, cite objective third-party evidence of genericness, descriptiveness, or mismatched specimens.
File early! If you subscribe to a watch service or otherwise discover a trademark that you believe could be confused with a mark you represent, submit your letter to the USPTO as soon as possible to ensure that it will be taken into account. While a letter of protest can still be filed after publication, the time limit is 30 days, and the USPTO limits letters submitted after publication to only those that prevent argumentation in favor of prima facie (self-evident) refusals.
Add the mark you’re protesting to Alt Legal or your trademark docketing software so you can monitor the trademark application for office actions and publication and identify the perfect time to file a Letter of Protest. Alt Legal’s trademark event notification service will alert you by email when a trademark you’re monitoring changes status.
Below is a sample letter of protest based on the above suggestions. Electronic filing through TEAS is recommended; an LOP should only be sent once.
Sample Letter of Protest
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
United States Patent and Trademark Office
COMMISSIONER OF TRADEMARKS
Attn: Administrator for Trademark Identifications, Classification and Practice
P.O. Box 1451
Alexandria, VA 22313-145
Filed electronically through the TEAS system
RE: Serial No: [########]
Mark: [LITERAL ELEMENT]
Applicant: [APPLICANT NAME]
Filing Date: [MONTH DAY, YEAR]
LETTER OF PROTEST
[Registrant] (“Registrant”) submits this letter of protest pursuant to TMEP § 1715.01(a)(2). As grounds for this Letter of Protest, it is alleged that the proposed mark in U.S. Application Serial No. [########] in International Class [###] (the “Applicant’s Mark”) is confusingly similar to the mark in Registration No. [#######], and should be refused registration on the Principal Register under Section 2(d) of the Lanham Act.&
Registrant is the owner of all right, title, and interest in U.S. service mark Registration No. [#######] for the mark [LITERAL ELEMENT] (the “Registrant’s Mark”) for “[MARK DESCRIPTION]” in International Class [###].
The Registrant respectfully alleges that there is a likelihood of confusion between the Registrant’s Mark and the Applicant’s Mark filed by the [APPLICANT NAME] (“Applicant”) contained in Application Serial No. [#######] for [LITERAL ELEMENT] for use in connection with “[MARK DESCRIPTION].”
The Registrant respectfully alleges the Registrant’s Mark and the Applicant’s Mark are sufficiently similar in appearance, sound, connotation, and commercial impression to permit a finding of likelihood of confusion. Additionally, the services, activities, and the channels of trade surrounding the marketing of the Applicant’s Mark and Registrant’s Mark are sufficiently related as to make confusion likely. In support of this allegation, Registrant has attached evidence demonstrating the relatedness of the services and activities surrounding the marketing of both marks below.
Based on the similarity of the Registrant’s Mark and the Applicant’s Mark, and because of the relatedness of the lines of services described, Registrant respectfully requests that you grant this Letter of Protest and advise the Examining Attorney as appropriate.
If any further information or response is requested or required, please contact the undersigned. The Protestor may be reached by telephone at [(###) ###-####].
Counsel for [Registrant], Protestor
INDEX OF EXHIBITS
Exhibit 1 – Side-by-side screenshot of Applicant’s social media page showing the Applicant’s Mark and Registrant’s social media page showing Registrant’s Mark
Exhibit 2 – Third-party social media post confusing Registrant with Applicant
Exhibit 3 – Prominent blogger linking to blog article about Applicant and tagging both Applicant’s and Registrant’s social media feeds
Exhibit 4 – Blog article written by prominent blogger linked in Exhibit 3 discussing Applicant
Exhibit 5 – Blog article from the same blog in Exhibit 4 discussing Registrant